Now and again we will receive instructions from a client (or foreign patent firm) to incur no further expense in a particular patent application. In such a patent application, what sometimes happens later is that we receive an Office Action. This prompted me to share a few thoughts about whether the applicant should file an Express Abandonment in such a case.
When instructions like this arrive, usually this is in an application that has been finally rejected. In such a case, if we take no further action (at the client’s instruction) then the next thing that happens is a Notice of Abandonment. That’s not very interesting and it’s not the kind of case that I am talking about in this blog post. What I am talking about is the (relatively rare) case where instructions like this arrive in a case that has not yet been examined in the USPTO.
The question that arises, in a case that has not yet been examined in the USPTO, is whether it might make sense not merely to note the “no further expense to be incurred” instructions in the file, but maybe also to file an Express Abandonment at the USPTO.
What’s the point of an Express Abandonment? Well, there are at least two possible benefits from the filing of an Express Abandonment.
First, if you expressly abandon a case that has not yet been examined at the USPTO, you can get a refund of the search fee and any excess claims fees. (I have never understood why it is not possible to get a refund of the examination fee as well.)
Second, if you expressly abandon a case that has not yet been examined at the USPTO, the result will be that you prevent an Office Action from getting mailed. This might very well be in the client’s interest. If an Office Action arrives, it might (for example) cite new prior art references, and this might trigger a duty of disclosure to file IDSs in other pending cases of this same applicant.
And it will be recalled that the USPTO is not the only patent office with a duty of disclosure. (IIRC India and Israel also have duties of disclosure, for example.) So the arrival of an Office Action from the USPTO might trigger a need to file documents in other patent offices.
A client might actually prefer, then, that an Express Abandonment be filed in the USPTO, so as to avert the arrival of an Office Action and thus the expense of a number of other consequent tasks.
Having said all of this, one must bear in mind that USPTO’s policy is that an Express Abandonment is irrevocable. MPEP section 711 offers a refreshingly thoughtful discussion of factors which an applicant might wish to consider before taking this irrevocable step. These include the realization that there is a difference between abandoning an invention on the one hand or an application on the other hand. The MPEP section also reminds the reader to consider the effect that an abandonment might have upon continuation or divisional applications. The MPEP section also offers some good advice to the patent practitioner:
The applicant or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment.
(Emphasis added.) The MPEP section also reminds the thoughtful reader that a CPA is not at all the same thing as an RCE:
The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.
We are reminded that with an RCE, it is the same application before and after the RCE. In contrast, with a CPA, a new application is being filed and the previous application is being expressly abandoned.
In our office we only very rarely file an Express Abandonment. I guess this is mostly because of the fear of later facing a question of whether there was some misunderstanding between the applicant and foreign counsel, or between foreign counsel and our firm, as to whether the irrevocable step is or is not what the applicant wants to do.
What do you think about filing an Express Abandonment before a first Office Action? Please post your comment below.